Creating Flight Plans Online? Patented! Small Company Sued Out Of Business For Not Wanting To Pay $3.2 Million Per Month

from the oh-come-on dept

Thanks to Kiran Lightpaw for alerting us to yet another example of patents being used to stifle innovation, rather than enable it. It involves a company called FlightPrep, that secured a patent (7,640,098) a year ago, covering generating a flight plan online and filing it online. Basically, it's one of your typical "just add online and patent it!" patents that never should have been granted. In fact, the patent, which was first applied for in 2001 was rejected repeatedly, and many adjustments had to be made before the patent examiner finally gave them the patent.

While some firms just paid up rather than spend the million dollars plus it would cost to fight this in court, one small operator, RunwayFinder, chose not to do so, and PrepFlight responded by suing RunwayFinder for $3.2 million per month for creating a rather straightforward "draw a flightplan online" app. How this is not "obvious to those skilled in the art" is beyond me (and many other software developers in the space, such as Minar). In response, RunwayFinder has shut down its service. FlightPrep, sensing some seriously bad PR among people who actually use its software scrambled to offer RunwayFinder a free license... but only until an agreement is worked out or the lawsuit concludes. RunwayFinder's creator notes that since FlightPrep won't drop the lawsuit, he doesn't feel it's right to accept the license, which certainly makes sense.

FlightPrep's open letter about the patent to the community is pretty unintentionally funny:

We realized that it is impossible for us, and for that matter, any business, to develop the proprietary technology to provide useful products and services, while at the same time giving it away and remain a viable business. Thus, we filled for a patent in 2001 with the United States Patent and Trademark Office (USPTO).

I'm really trying to figure out what one has to do with the other. The first sentence has no connection to the second sentence. You can absolutely develop a proprietary technology to provide useful products and services and build a viable business without filing for a patent. Hell, I've done it. I'm also not sure what 'giving it away for free" has to do with anything either. Pricing decisions are separate from pretty much everything else in both of those sentences.

It is not our intent to create a monopoly, put others out of business, or prevent others from participating in the aviation community.

Well, you failed on all three counts then. A patent is a monopoly (that's what they were originally called), so pretending otherwise is pretty disingenuous. And it looks like RunwayFinder has been put out of business and are prevented from participating in the aviation community.

Just the fact that there are so many players competing in this space seems to show pretty clearly that (a) the concept was the natural progression in the space, and thus "obvious" and not patentable (b) that the market does not and did not need patents to develop. About the only thing the patent appears to be doing is hindering innovation, either by making a bunch of companies feel the need to pay up to avoid a lawsuit or shut down to avoid the lawsuit. That's not innovation. That's blackmail.

Re:

They have guidelines, and there is and has been confusion over software patent legitimacy. The agency's incentives (at least in terms of maximizing revenue/profits) are aligned to support the patent types industry likes. People applying for patents are seeking monopoly power and software patents are among those at the top (not to mention relevancy because digitalization and other improvements since have led to significant control capabilities being able to be built very cheaply in software).

You may want to be careful about clicking on those links - PrepFlight counted each visit to RunwayFinder as a lost sale of $149 to reach $3.2m. I believe they got this from Compete.

Quite apart from the unreliability of these statistics for low traffic websites like RunwayFinder's, if PrefFlight's lawyers do actually know how to get a 100% conversion rate from general web traffic (possibly greater than that if they didn't use the unique visitors figure) then they are clearly in the wrong line of business.

Blackmail?

defend patent in court

I wish that if you filed a claim for patent infringement that the patent would be up for review by the court. The court shouldn't just assume that the patent is valid because some examiner rubber stamped it. The court should be able to invalid it.
EG. this patent is obvious, patent is invalidated, case dismissed.

Re: defend patent in court

Re: Re: defend patent in court

True, but if this reduced corresponding infringement claims, it might be manageable. I like the idea--and I think the review should proceed regardless of the outcome of the suit (settled, dismissed, etc.).

The bad news: patent reviews aren't exactly full of sanity and reason either.

Re: defend patent in court

"I wish that if you filed a claim for patent infringement that the patent would be up for review by the court."

It is. Any time a patentee files suit on their patent they are opening it up to a counterclaim of invalidity, and the defendant has the opportunity to build a case for invalidity using evidence (as opposed to conjecture). The statutory presumption of validity is only that, a presumption.

Thanks, Techdirt, for picking up this story. Especially because this affects, frankly, a small and ever-shrinking community (mostly recreational general aviation pilots), shining some light on FlightPrep's patent trolling abuse is a great help.

I'm a student pilot right now. The process of earning a license, especially if one wants to do so without going into debt, is long, arduous and expensive. RunwayFinder was an invaluable resource to me as a student, enabling me to study charts nationwide and plan flights without even getting in the cockpit. I could study airspace, look at obstructions, get airfield information, and find backup fields with very little work. And, unlike SkyVector (which caved to FlightPrep's blackmail), it actually worked in Google Chrome.

This is a terrible patent that should never have been issued. Not only is it incredibly vague and bloody obvious, but they used legal sleight of hand in the form of a divisional patent to back-date their "flight planning" patent to 2001 by attaching it to an earlier filing. The divisional patent was filed on September 28, 2005, well after RunwayFinder and a number of other flight planning sites were already online.

In short, FlightPrep killed an incredibly valuable educational and flight safety resource with their greed.

There is no reason that the Supreme Court cannot go all the way, and create a presumption of invalidity. The whole idea of presumption of validity, inn the largest sense of the word, was that people further down the line had greater opportunities to confront the actual facts than the people who eventually ruled on the cases. For example, witnesses actually appeared before a trial court, and an appeals court have to give some deference to what the trial court had made of them. However, the reality of a patent case is that the court and the lawyers have the time and money to become far better acquainted with the facts of a patent case than a patent examiner on a time clock can do.

Re: This Is On the Supreme Court Agenda.

An earlier comment links to a thread where a patent examiner (or so he states he is) acknowledges that he has not read any of the hundreds of millions (billions) of open source software lines of code that are in active use today (or have been written over the years).

Now, even if he wanted to or was supposed to (which he might not and is not), that would be a heck of a lot of prior art to master and on what time? It is impossible to master all that code. At best, you would have to take an average of a few of the top contributors/maintainers from almost every open source project and then require that each of these experts check off each patent that goes through the system. Is this humanly possible to ask of each expert (to skim and maybe study on the order of hundreds of software patents per year each)? Will they get paid? Will they get paid enough to stop doing what they like to do or to cut short their business to tend to the USPTO? Will the USPTO ever seriously consider paying all of these people to do what they will view as duplicate work and against the interests of their paying clients and might lead them to turn a significant profit into a loss?

Of course, without doing this work, we need to presume invalidity as you mentioned.

And software is information. Patents were not intended to hold back progress over information that is $0 marginal costs in time, money, energy, and materials to manufacture and distribute and where free expression rights are also at stake. [even if the inventiveness bar was high, which it most certainly isn't, and this has very serious consequences for a field jam-packed with innovating participants because costs are so low to participate -- it's information creation utilizing "household appliances".]

Re: This Is On the Supreme Court Agenda.

I think that is backwards.

The burden of proof should be on the applicant not others.
He should go to court and show how that it has a valid patent not others having to defend themselves and prove that the patent is invalid, of course this would be the government paying for the legal costs, which would mean tax payers money, but since this is a serious thing after all you are granting super power to someone it should be very carefully analyzed, not rubber stamped and praying for the best.

I wonder how the big boys are feeling

Jeppesen (a division of Boeing) is huge in the flight planning marketplace. Their technology pre-dates FlightPrep.

Unfortunately for Flight Prep and fortunately for general aviation it is a pretty small community; I can't believe that this company won't be hurt by the negative publicity and commentary on their boneheaded tactics.

HMM

Maybe I see things different. So if I back in the day designed a bi-cycle and got a patent. Can I sue someone who makes something that works similar but is of a different design (say different frame shape, maybe a shock absorber added). my understanding is that a patent is for a very specific design. So in this case it should be specific to the code (aka the design) that FlightPrep used. Therefore if I were to create a separate and unique code that requires innovation and capital investment on my part I should then have a ground for my own new unique patent. To say that once FlightPrep created their system and got a patent all others are in violation is like getting a patent for an idea. If we can patent ideas then I would like to apply for a patent for a system to store our medical records electronically so that I can sue the government as well as all the health care companies.

Re: HMM

The problem is that for some reason, it isn't specific to the actual code - Probably because you can patent a process, not just a design. The law would have to be changed so that software patents would only be covered if the specific code is included.

Re: HMM

No you shouldn't. Sure, writing code takes time and time is money. That's why copyright is there to protect you. You don't deserve a patent, any more than an artist or author or musician deserves a patent on artistic or literary or musical ideas. Software ideas are not inventions, despite the air of mysteriousness and complexity that surrounds programming for most people (whereas most people think they could write, draw, or sing if they simply felt like it)

DUATS

I've been using DUATS to get weather briefings, generate and file flight plans online since 1990.

They mention DUATS in their patent filing, noting that it's primarily a text based solution.. and thus seem to be claiming that their main invention is doing this in a web browser "with a housekeeping frame".

Al Gore

monopoly, stifle innovation, each click (download?) means a lost sale, sue everyone, force companies/web sites to shut down. sounds very much like the attitude of the entertainment/copyright industries to me! when the hell is this crap going to end? politicians have no idea how big a can of worms they have opened by allowing/encouraging stupid patent filing and copyrighting to go this far!

I'm gonna own it all!!!

A process for generating computer flight plans on the Internet with the elements of: a raw XY&Z database of chart data, a data base containing aircraft data, a software system to create VFR, IFR and Road charts, an Internet web site accessible by a Client computer, a software system which computes flight plans requested by the Client computer, a software system which allows for navigation data and aircraft editing by means of the Internet web site Client computer, and a software system which allows for outputting flight plans by means of the Internet web site Client computer. A alternate embodiment includes wherein said elements include a local area network consisting of a service and number of local Client computers or an Intranet network which is connected by means other than wires such as infrared or radio signals. A preferred embodiment includes further comprising the step(s) of computing by means of a software systems a cross section of the flight plan and displaying same in a profile window in which the route is displayed relative to terrain elevation, obstruction elevation, airspace, weather and flight altitude.

It also has the following:

BACKGROUND OF THE INVENTION

[0001]This invention relates generally to the field of aviation software, and more particularly to a process for generating computer flight plans on the Internet. However, as will become obvious later, additional applications of this invention may also include the field of cartography, route planning for motor vehicles, marine vehicles and similar utilization.